Samsung Electronics Co Ltd v. Staton Techiya LLC

1. Case Identification

• Case #: IPR2022-00281
• Patent #: 9,270,244
• Filed: December 21, 2021
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Staton Techiya, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Automatic Ambient Sound Pass-Through for Earphones
• Brief Description: The ’244 patent describes a method and system for automatically passing ambient sound to an earphone user. The technology aims to solve the problem of users being sonically isolated from their environment by automatically detecting a voice conversation and activating a sound pass-through system, allowing the user to hear and interact with a nearby person without manually stopping audio playback or removing the earphones.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenberg - Claims 1-3, 6, 13-14, 17-19, and 25-26 are obvious over Rosenberg.

• Prior Art Relied Upon: Rosenberg (Application # 2007/0189544).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenberg, a single reference, teaches every limitation of the challenged claims. Rosenberg describes a media player with earphones and an ambient microphone that monitors for "characteristic forms," such as a user's name or a specific voice, to trigger an "Intelligent Automatic Volume Reduction" routine. Upon detection, Rosenberg's system automatically mixes ambient sound with the media content by adjusting their relative volumes. This was asserted to meet the ’244 patent’s core limitations of "close proximity detection" and "automatic audio mixing." Furthermore, Rosenberg's disclosure of a configurable "time delay" and a "time gap" that maintains the adjusted volume for a period after speech ceases allegedly meets the "automatically activating a voice timer" limitation.
  • Motivation to Combine: Not applicable for a single-reference ground. Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious to implement the functions disclosed in Rosenberg.
  • Expectation of Success: Not applicable for a single-reference ground.

Ground 2: Obviousness over Rosenberg and Kvaloy - Claims 4, 27, and 28 are obvious over Rosenberg in view of Kvaloy.

• Prior Art Relied Upon: Rosenberg (Application # 2007/0189544), Kvaloy (Patent 6,728,385).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Rosenberg to address claim 4's limitation of an earphone configured for "full sound isolation." While Rosenberg teaches earphones that provide some sound separation, Petitioner asserted that Kvaloy teaches a protective earplug with a "sealing section" made of a resilient, slowly re-expanding polymer foam. This sealing section is designed to conform to and acoustically seal the user's ear canal, which Petitioner argued would provide the claimed "full sound isolation."
  • Motivation to Combine: A POSITA would combine Kvaloy's sealing feature with Rosenberg's audio system to achieve the shared goals of both references: protecting a user's hearing from loud environments while simultaneously improving the ability to communicate. The combination would improve Rosenberg's device in a predictable way.
  • Expectation of Success: Petitioner argued that incorporating a known sealing technique from an earplug (Kvaloy) into an earpiece (Rosenberg) to improve sound isolation was a simple and predictable modification for a POSITA, who would have a reasonable expectation of success.

Ground 3: Obviousness over Rosenberg and Park - Claims 5, 7-12, 16, and 20-24 are obvious over Rosenberg in view of Park.

• Prior Art Relied Upon: Rosenberg (Application # 2007/0189544), Park (Patent 9,037,458).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claim limitations related to spatial audio processing, such as "determining a direction and proximity" of a speaker. Petitioner argued that Rosenberg suggests using known signal processing techniques on ambient audio, and Park explicitly teaches these very techniques. Park discloses using a multi-microphone array to separate captured sounds by "sources or direction of arrival" and "distance." Park further teaches adjusting the gain of the ambient sound pass-through as a function of direction, for example by using beamforming to amplify a speaker in front of the user while attenuating interfering sounds from other directions.
  • Motivation to Combine: A POSITA seeking to improve the signal processing capabilities of the Rosenberg system would have been motivated to incorporate Park's advanced techniques. Doing so would directly address Rosenberg's goal of facilitating a user's hearing of "detected ambient sound events," such as another person's voice, by making that voice more perceptible over background noise.
  • Expectation of Success: Applying Park's known spatial processing and beamforming methods to Rosenberg's audio system would have been a straightforward application of a known technique to yield the predictable result of improved directional voice detection.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 29-30 over Rosenberg, Kvaloy, and Park, and for claim 15 over Rosenberg, Park, and Olwal (a publication on gesture tracking via audio localization). These grounds leveraged combinations of the above teachings to address further limitations related to detecting frontal voice activity and using a user's leaning gestures to adjust audio gain.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 314(a) based on Fintiv factors. It emphasized that the parallel district court litigation was in its nascent stages, having been filed only 42 days prior to the petition. Key factors cited as favoring institution included the lack of a trial date, minimal investment by the court and parties, and the compelling case of invalidity presented in the petition.
• Petitioner also contended that denial under 35 U.S.C. § 325(d) was inappropriate because the prior art references relied upon in the petition were not previously considered by the USPTO during the original prosecution of the ’244 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of Patent 9,270,244 as unpatentable.